Tuesday, February 14, 2017

The Board affirmed a Section 2(e)(1) refusal of the mark HONEYFILE, finding it merely descriptive of "computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence" and for related computer security services. The Board also affirmed the USPTO's rejection of applicant's specimen of use for the software because it constituted mere advertising. In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential].

Mere Descriptiveness: The evidence established that, in the cybersecurity industry, a "honeyfile" is a "bait file that is intended for hackers to open, and when the file is opened, an alarm is set off." Applicant's specimens confirmed this finding: "We design HONEYFILES to attract adversaries with feasible mock assets." Thus the applied-for mark immediately informs consumers of a "quality, feature, function or characteristic" of applicant's goods and services. Despite applicant's arguments, the Board failed to find any incongruous meaning in the mark when considered in the context of security software and services.

Class 9 specimen of use: Applicant's specimens of use consisted of screenshots of its website, but the Examining Attorney maintained that the specimens were merely advertising materials and did not constitute a "display associated with the goods" because there was no means for ordering the software.

The Board looked to Section 904.03(e) of the TMEP (Jan. 2017), which states that for downloadable software an applicant may submit a specimen showing use of the mark on an Internet website. Such a specimen is acceptable if it "creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website." *** If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable."

The Board agreed with the examining attorney that applicant's specimens of use were unacceptable.

None of Applicant’s proffered specimens includes a "download" or similar link to put the consumer on notice that the identified goods are indeed available for download or the equivalent thereof. As such, the specimens cannot qualify as a display associated with the goods on this basis.

As noted above, a display of a mark on a screen that appears when computer software is in use is a suitable display associated with the goods. Here, there is no evidence to indicate that that is the nature of the specimens. The specimens merely provide a description of Applicant's products, in the nature of mere advertising. This, however, is not enough.

The Board concluded that applicant's specimens of use failed to show use of the mark in commerce with applicant's class 9 goods.

2 Comments:

I don't think the Board's reasoning on the descriptiveness refusal was right at all. They made a big leap between some unregistered third party uses by cybersecurity experts to saying that purchasers would immediately know what the services were and not recognize HONEYFILE as a trademark. I just posted a blog about it at www.ipbreakdown.com. I'd love to know what you think.

I think Bitvoyant's own use of the mark was really damaging. And even if "honeyfile" is an insider's term for this type of file, shouldn't others in the field be allowed to use it without fear of a complaint from Bitvoyant? I don't know enough about cybersecurity to opine whether sophisticated people in the field would not need a "honeyfile," and therefore the only customers would be unsophisticated. In sum, the decisions doesn't seem that off base to me.